Pitfalls of Claiming Priority to U.S. Design Patent Applications for Related Foreign Applications

In the U.S., for decades, it has been common practice for patent practitioners to disclaim certain subject matter in design patent applications with the use of broken lines. In the U.S., the law with respect to disclaimed subject matter is well settled, beginning with the seminal case, In re Zahn, 617 F.2d 261, 204 USPQ 998 (CCPA). In many cases, the use of such broken lines provides for substantially broader protection, drastically increasing the value of U.S. design patents (see, e.g., the Apple v. Samsung line of cases).

However, if related design patent protection in multiple foreign countries is desired, issues may arise due to inconsistencies in laws among the various countries with respect to disclaimed subject matter. For example, in numerous countries, a design patent must claim a “complete manufacturable item,” (e.g., Australia and New Zealand, Brazil, Chile, China, South Africa). In the U.S. and some other countries (e.g., Israel, Japan, South Korea), a complete manufacturable item need not be claimed. Many other differences in laws among countries also exist, sometimes resulting in application errors that are fatal to the foreign application where insufficient initial preparation was made. Various strategies may be used to minimize these issues when protection is desired in various countries including, for example, filing multiple U.S. embodiments or applications or refraining from filing in certain countries in which the limited scope of a resulting design patent no longer justifies the expense. However, it is wise to take these considerations into account at the time of filing an initial U.S. design patent application for which there is an intent to file one or more related foreign applications. If you have any questions regarding U.S. and foreign filing of design patents, please contact us.